- Medivis, Inc. v. Novarad Corp.Rehearing deniedPTAB · Apr 23, 2024 · IPR2023-00042 · APJ Scott Raevsky · IPR · Rehearing
The Board denied Medivis’s rehearing request, leaving in place the decision that claims 1–6 and 11–20 were not shown unpatentable because the cited references’ public accessibility was not established.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply. Thus, a request for rehearing is not an opportunity to present new arguments or evidence or merely to disagree with the panel’s assessment of the arguments or weighing of the evidence. With this in mind, we address the arguments presented in turn.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“accessibility, except the references Chen, 3D Visualization, and 3D Slicer themselves. This is insufficient and tantamount to submitting no proof of public accessibility. To find public accessibility, we must determine that a “document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art[,] exercising reasonable diligence, can locate it.” SRI Int’l, Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008), quoted in Dec. 26–27. Petitioner has insufficiently explained, by a preponderance of the evidence, how Chen, 3D Visualization, and 3D Slicer themselves answer the question of whether they have been disseminated or otherwise made available to those of ordinary skill in the art. Thus, we did not overlook or misapprehend any evidence of public accessibility on pages 29–30 of the Petition.” slip op. at 4
- Strike new argumentNew argument disregardedOther
“declaration by reference, we exercised our discretion to address a portion of it in our Decision. Dec. 30–31. We did so because we noted that his testimony was “particularly deficient for [the 3D Slicer] reference.” Id. at 30. Petitioner now asserts that in doing so, we “misapprehended or overlooked the logic that application documentation” like 3D Slicer’s “must be accessible to potential application users because it serves to help users use the application.” Req. 7. But Petitioner’s assertion that “application documentation must be accessible to potential application users because it serves to help users use the application” is a new argument, not raised in the Petition or Reply. Even if Petitioner’s assertion were correct, it falls far short of the evidence required to prove that 3D Slicer was actually disseminated to interested members of the public. See, e.g., Weber, 92 F.4th at 1068. Thus, Petitioner’s argument fails to persuade us that we overlooked or misapprehended anything.” slip op. at 11
§ 102 anticipationPatents in suitUS 11,004,271 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01209 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked adequate evidence and reasoning to support the proposed obviousness combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“As the Petition makes clear, the linchpin of Petitioner’s argument for modifying Brenner is that a person of ordinary skill in the art would have recognized reliability issues due to signal loss in the optical waveguide of Brenner’s device. See Pet. 21 (“Thus, a [person of ordinary skill in the art] would have recognized that the security device of Brenner is prone to reliability issues due to signal loss in the optical waveguide.”); id. at 34 (“A [person of ordinary skill in the art] would recognize that . . . the security device will likely suffer from reliability issues associated with signal loss within the optical waveguide.”); id. at 35 (“[T]he optical transceivers of the sensor unit and the base unit may not be able to reliably communicate with one another due to optical signal loss within the optical waveguide.”); id. 6 The Petition and our Decision refer to this book by its title (“Communications Standard Dictionary”), but Petitioner now refers to it by the last name of its author (“Weik”). Compare Pet. 6, 19, with Req. Reh’g 2. For convenience and consistency with the Request for Rehearing, we refer to the book herein as “Weik.” Notably, Petitioner did not submit Weik as a prior art printed publication to be considered as part of an unpatentability ground, as set forth in 35 U.S.C. § 311(b) (2018). See Pet. 5. Rather, the Petition cites Weik as support for its proposed claim construction and as support for an alleged “well-known fact” that an optical waveguide subjected to bending or winding is prone to signal loss. Id. at 6, 19. skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 17–18 (citing Pet. 21, 35). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 4
- Strike new argumentNew argument disregardedDecided for patent owner
“We are not persuaded that we overlooked evidence from Weik relied on in the Petition. Our Decision considered Weik’s description of a “microbend loss” that was quoted in the Petition: “the optical power loss caused by a microbend, i.e., a small bend, kink, or abrupt discontinuity in the direction of the optical axis of fibers, in the core-cladding interface surface, or both, usually caused by cabling, wrapping the fiber around drums and (citing Pet. 34–35 (citing Ex. 1002, 576)). But Petitioner does not identify, nor do we see, any assertion in the Petition that Weik shows a microbend loss can cause a “total failure” of an optical signal to reach its destination. See Req. Reh’g 9; Pet. 19–20, 34–35. Petitioner’s Request for Rehearing also does not identify where the Petition addressed Weik’s statement that microbends can cause radiative loss. See Pet. 19–20, 34–35. Because these arguments were not presented in the first instance in the Petition, we could not have overlooked them in our Decision.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 10,062,253 - Vanguard Products Group, Inc., D/B/A Vanguard Protex Global v. Invue Security Products Inc.Rehearing deniedPTAB · May 26, 2020 · IPR2019-01206 · APJ Lynne E Pettigrew · IPR · Rehearing
The Board denied rehearing and left in place its denial of institution because the Petition lacked sufficient evidence and reasoning to show a reasonable likelihood of prevailing on obviousness.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“burden of showing the decision should be modified. 37 C.F.R. § 42.71(d) (2019). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. “When rehearing a decision on petition, a panel will review the decision for an abuse of discretion.” Id. § 42.71(c); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”). “An abuse of discretion is found if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4) involves a record that contains no evidence on which the Board could” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“ordinary skill in the art] to improve the reliability of the security device of Brenner . . . .”); see also Dec. 14–15, 18 (citing Pet. 21, 36–37). Because we determined in our Decision that Petitioner failed to show sufficiently that a person of ordinary skill in the art would have recognized reliability issues in Brenner’s device, we concluded Petitioner did not provide adequate reasoning with rational underpinning for why a person of ordinary skill in the art would have been motivated to modify Brenner as proposed. Dec. 16– 18.” slip op. at 5
§ 103 obviousnesscites KSRPatents in suitUS 9,818,274 - Unified Patents Inc. v. Red Rock Analytics, LLCRehearing deniedPTAB · Feb 28, 2018 · IPR2017-01490 · APJ John D Hamann · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show that the Board misapprehended “calibration cycle” or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW The applicable standard for a request for rehearing is set forth in 37 C.F.R. § 42.71(d), which provides in relevant part: A party dissatisfied with a decision may file a request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. See 37 C.F.R. § 42.71(c). An abuse of discretion may be determined if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. See Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). III.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“calibration cycle.” E.g., Ex. 1001, 11:66–67 (emphasis added). We found that how the calibration cycle is referred to in this limitation (i.e., signal includes it) underscores that the calibration cycle is a feature of the calibration RF signal itself. Dec. 15–16. Rather than addressing this claim 1 U.S. Patent No. 6,940,916 B1 (issued Sept. 6, 2005) (Ex. 1003, “Warner”). 2 We do not address further Warner’s teachings because Petitioner’s arguments are predicated on our having misapprehended the meaning of “calibration cycle,” which we did not. In an inter partes review, the petitioner has the burden to show why the patent it challenges is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015)(citation omitted).” slip op. at 4
- BurdenNot shown unpatentable
“signal includes a calibration cycle.” Ex. 1001, 11:56–12:5 (claim 1), 12:22– 54 (claim 7), 13:18–49 (claim 16), 13:63–14:30 (claim 22), 14:65–15:32 (claim 32), 15:46–62 (claim 38), 16:12–44 (claim 44), 17:8–37 (claim 53), 17:52–18:19 (claim 59), 18:52–19:18 (claim 69) (emphasis added). In denying the Petition, we found that Petitioner did not establish that the prior art disclosed or rendered obvious this limitation. Dec. 8–19. More specifically, we found that the calibration cycle relates to a feature of the calibration radio frequency (“RF”) signal (i.e., the signal includes), rather than simply requiring having a calibration process occur, as Petitioner submitted. Id. at 15–19. Our reasoning underlying this finding related to (A) the language of the limitation, (B) the language of dependent claims, and (C) the ’313 Patent’s Specification. Id.” slip op. at 3
Claim constructionPatents in suitUS 7,346,313 - Alarm.Com Inc. v. Vivint, Inc.Rehearing deniedPTAB · Jul 28, 2016 · IPR2016-00161 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 11–13, 15, 16, 19–21, 23, and 24 because the asserted art did not teach the claimed device identification codes.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). The burden of showing a decision should be modified lies with the party challenging the decision, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. Moreover, it is not an abuse of discretion to have performed an analysis or reached a conclusion, with which Petitioner disagrees; mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“unpatentable, Petitioner cited Shetty’s disclosure that “the user may be notified by an electronic mail message or report 114 or by a[] pager report via a pager 116 or by a facsimile report 122” (Ex. 1103, 2:46–48), and Levac’s disclosures that “the message template with the variable value may be submitted to message server 14 through user interface 20 and message file generator 23 as a .msa file,” which “can then be stored in variable database 29 to await receipt of variable data”; and that “[p]referably, the .msa file created by message file generator 23 may incorporate . . . the following information: 1. OWNER: identifies the user who created the file . . . . 10. DESTPARAMS: supplies a list of destination parameters, such as recipient site location, required for transmitting the message to the destination” (Ex. 1105, 4:48–52, 5:49–53, 11:8–13). Pet. 38–39. In our Decision on Institution, we agreed with Patent Owner’s argument in its Preliminary Response that the evidence cited by Petitioner does not teach or suggest storing “communication device identification codes of all of said user-defined communication remote devices,” explaining that we could find in Petitioner’s cited evidence no suggestion that either Shetty’s “user profile database” or Levac’s “variable database” store anything that could be termed “communication device identification codes” under any reasonable interpretation of that term. Dec. on Inst. 40. In particular, we found that Shetty describes storing user profiles containing definitions of “how to send a notification to [an] associated user,” but that those definitions would, at most, identify addresses such as for e-mail messages or reports or telephone numbers such as for pager reports or facsimile reports,5 not the recited “communication device identification codes.” Id. at 40–41. We also explained that we agreed with Patent Owner that neither identification of the user who created a file, as in the “OWNER” field of Levac’s variable database, nor supplying parameters such as recipient site location, as in Levac’s “DESTPARAMS” field, teaches or suggests “communication device identification codes.” Id. at 41.” slip op. at 4
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“that a user may be notified by “an electronic mail message or report 114 or by a[] pager report via a pager 116 of by a facsimile report 122,” and Levac discloses storage of identification of the user who created a file and “recipient site location,” we disagree with Petitioner’s premise that Shetty’s and Levac’s disclosures are “identical to the preferred embodiment of the ’654 Patent” for the “communication device identification codes” limitation of claims 11 and 19.” slip op. at 6
§ 103 obviousnessPatents in suitUS 6,462,654 - I-Blason LLC v. Aevoe Corp.Rehearing deniedPTAB · Jul 25, 2016 · IPR2016-00231 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 1, 2, 5, 7, and 11–14 because Petitioner did not show the interference-pattern limitation or iVisor’s public availability.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that I-Blason did not establish a reasonable likelihood of prevailing on its challenges as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. III. CONCLUSION For the foregoing reasons, I-Blason has not shown that we abused our discretion when determining not to institute an inter partes review as to claims 1, 2, 5, 7, and 11–14 of the ’942 patent. IV. ORDER For the foregoing reasons, I-Blason’s Request for Rehearing is denied.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedDecided for patent owner
“publication (Ex. 1005) is a printed publication within the meaning of 35 U.S.C. § 102. Req. Reh’g 7–8. I-Blason cites a Board decision that found that a web page with a note of “last modified on February 2, 1999” was a printed publication as of that date. Id. at 7 (citing American Megatrends, Inc. v. Kinglite Holdings, Inc., Case IPR2015-01079, slip op. 11 (PTAB October 29, 2015) (Paper 17)). As we explained in the Decision (see Dec. 14), the evaluation as to whether a document is a printed publication is considered on a case-by-case basis. See In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). Here, the iVisor document appears to be a type of web page that could be subject to frequent changes and updates. Moreover, other than unsubstantiated testimony from I-Blason’s counsel of record concerning a 2015 version of the document (Ex. 1019 ¶ 3), I-Blason provides no evidence to demonstrate that the version of iVisor filed in this proceeding was made publicly available in 2009. Upon reconsideration, we maintain our initial determination that I-Blason has failed to make a threshold showing that iVisor is a printed publication.” slip op. at 5
- Expert testimonyPetitioner expert discountedDecided for patent owner
“produce visible interference patterns because Murphy forms a single air gap (rather than multiple bubbles).” Req. Reh’g 3–4. This issue was not argued in this manner in the Petition or Ross Declaration. Moreover, even if we were to consider this variation, we still would not be persuaded. The Decision indicated that there was a failure by Dr. Ross to “explain adequately why the interference patterns would not occur in Murphy.” Dec. 12. Even with the variation on the argument raised in this Request, we still find adequate explanation lacking. I-Blason states in a conclusory manner that “[t]o hold that there is a possibility that Murphy produces interference patterns without screen protector contact would contradict a [person of ordinary skill in the art’s] understanding of how interference patterns such as Newton Rings are created,” citing to the background section of the Ross Declaration concerning bubble-free screen protectors. Req. Reh’g 4 (citing Ex. 1018 ¶¶ 19, 20). These references do little to aid in an understanding of how an air gap configuration would not necessarily produce interference patterns.” slip op. at 3
§ 102 anticipationPatents in suitUS 8,044,942 - Apple Inc. v. Contentguard Holdings, Inc.Rehearing deniedPTAB · Jun 21, 2016 · IPR2015-00454 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied Apple’s rehearing request and left in place its denial of institution on claim 18 over Rosen and Hartrick, finding procedural defects and an inadequate obviousness showing.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW When rehearing a decision on a petition, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing a decision should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked, and the place where each matter was previously addressed in” the petition. 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“failure to comply with 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4)–(5). Dec. 4–5. In particular, we determined that: (1) “[t]he entire Petition is riddled with vague, nested string citations to broad swaths of the references, the [Declaration of Alan Sherman (‘Sherman Declaration’)], and internal cross-references to whole sections of the Petition” (id. at 5); (2) the Petition utilizes a convoluted structure resulting in an “unpatentability analysis [that] is at least two or three levels removed from the actual disclosure of the references” (id. at 6–7); and (3) the Petition relies on an improper incorporation by reference of the Sherman Declaration4 (id. at 7– 8). In addition to these procedural defects, we also determined “that the Petition’s obviousness analysis does not provide sufficient information to enable us to perform a proper Graham analysis, is driven by improper hindsight, and lacks sufficient articulated reasons with rational underpinnings to support the modifications it proposes.” Id. at 9; see also id. at 9–15 (discussing deficiencies of the obviousness analysis).” slip op. at 3
- BurdenDecided for patent owner
“To succeed on its Rehearing Request, Petitioner must show where we misapprehended or overlooked arguments in making the aforementioned determinations and that we abused our discretion in reaching each of these determinations. As we explain below, Petitioner has not done so.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“As we explained in our Decision, even Petitioner’s attempt to classify the changes as limited to four modifications is unconvincing. Dec. 12–14. Having considered Petitioner’s arguments on rehearing, we reaffirm our conclusion in the Decision that the Petition does not explain sufficiently “why a person of ordinary skill would simultaneously make all of the many particular proposed changes [(i.e., ‘modifications’)] and implementation choices to combine Rosen and Hartrick,” for the reasons explained in the Decision. Id. at 13.” slip op. at 7
§ 103 obviousnessPatents in suitUS 7,269,576 - General Plastic Industrial Co., Ltd. v. Canon Kabushiki KaishaRehearing deniedPTAB · May 19, 2016 · IPR2015-01966 · APJ Sheila F Mcshane · IPR · Rehearing
The Board denied rehearing and maintained its decision not to institute review of claims 1, 7–9, and 16 because neither challenge showed a reasonable likelihood of success.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. DISCUSSION A party requesting rehearing has the burden to show a decision should be modified by specifically identifying all matters the party believes the Board misapprehended or overlooked, and the place where each matter was addressed previously in a motion, opposition, or a reply. 37 C.F.R. § 42.71(d). When rehearing a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion may be indicated if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). We address the General Plastic’s contentions outlined above, first with respect to the anticipation challenge and, then with respect to the obviousness challenge.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“construe[] [the claims at issue] to require that the recited sealing member must be of a one-piece or inseparable construction” or fail to apprehend that General Plastic was asserting that its anticipation challenge was based on a “part-time” analysis. See Req. Reh’g 2–3, 4–5. As explained in the Decision, we considered General Plastic’s assertion under the scenario where power transmitting member and fixed cover of the container are alleged “integrally combined”—that is, the “part-time” circumstances depicted in Figure 6 of Matsuoka—and found that the evidence was insufficient to support that view under the circumstances. See Dec. 15–18. Failure of General Plastic’s challenge does not equate to a requirement that the sealing member has to be of one-piece or inseparable construction, but instead reflects that, based on the evidence and argument presented and developed in the Petition, we did not find a reasonable likelihood that General Plastic would prevail on the anticipation challenge. As the Decision discusses, the Petition contains inconsistent mapping of the prior art onto the claim elements, and, contrary to General Plastic’s view of elements being “integrally combined,” Matsuoka instead discloses that the rotary power transmitting member is a part of copier, and not the toner container, and is detachable from the toner container.1 Id. at 17–18. This evidence is incongruent with a determination that General Plastic would have had a reasonable likelihood of prevailing on its anticipation challenge.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“did not overlook or misapprehend that the engagement claw portion 443 of the rotary power transmitting member can be decoupled from rotary shaft portion 442 and gear 47. Req. Reh’g. 12–14. We also did not overlook or misapprehend Dr. Spingett’s statements concerning the removal of the engagement claw portion 443. Req. Reh’g. 14 (citing Ex. 1007 ¶ 72). The issue as to whether one of ordinary skill in the art would have envisioned the possibility of a disengagement problem between the rotary power transmitting member and fixed cover in the first place underlies the motivation, according to Dr. Springer, for testing the removal of the engagement claw portion. See Ex. 1007 ¶¶ 71, 72. Thus, we determined that the evidence on the possibility of disengagement problem between the rotary power transmitting member and fixed cover was insufficient to support why one of ordinary skill in the art would have modified Matsuoka in the manner alleged in the Petition. See Dec. 20. Even after considering General Plastics new twist on the same arguments in this Request of Rehearing, our view remains the same. We, therefore, are not persuaded that we misapprehended or overlooked any matter in making our determination that General Plastic did not establish a reasonable likelihood of prevailing on its obviousness challenge as to claims 1, 7–9, and 16 of the ’820 patent.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,046,820 - PTAB · Apr 14, 2016 · IPR2015-01479 · APJ Charles J Boudreau · IPR · Rehearing
The Board denied rehearing, leaving in place its denial of institution because Petitioner did not show a reasonable likelihood that GTE rendered claims 1–8 and 16 obvious.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“comprising illumination units. Ex. 1016, 1:5–20. Although, as Petitioner points out (Pet. 41; Req. Reh’g 5–6), Philips cites GTE as “describ[ing] an illumination unit” and discusses certain advantages of the “high frequency supply” described by GTE (Ex. 1016, 1:60–2:4), we find that the cited disclosure in Philips amounts to insufficient evidence that a person of ordinary skill in the art would have understood GTE to describe an illumination unit that would be suitable for use as a backlight for an LCD device. As we explained in our Decision Denying Institution, GTE explicitly states that its lamp tubes are mounted side-by-side and parallel in a circular arrangement around a central axis, and we cannot discern how lamp tubes mounted in such an arrangement could be employed as an LCD backlight. Dec. 17–18. Philips’ discussion of GTE does not provide any guidance in that regard, and Petitioner’s contentions to the contrary in the Request for Rehearing are not persuasive. Req. Reh’g 9–11. We disagree, in particular, with Petitioner’s assertion that “as a matter of common sense, the circular arrangements disclosed in GTE would provide illumination around the entire circumference of the arrangement much like a single lamp tube would provide illumination around its entire circumference.” Id. at 10. Regardless whether Petitioner envisions GTE’s circular apparatus being mounted with its central axis parallel with, or perpendicular to, the plane of the LCD, Petitioner has not presented sufficient evidence to show how such an apparatus could, for example, provide the sort of “highly uniform light over the entire back surface of the liquid crystal panel” that Petitioner’s declarant Dr. Silzars states to be an objective of an LCD backlight unit. Ex. 1002 ¶ 24. In any event, it is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“comprising illumination units. Ex. 1016, 1:5–20. Although, as Petitioner points out (Pet. 41; Req. Reh’g 5–6), Philips cites GTE as “describ[ing] an illumination unit” and discusses certain advantages of the “high frequency supply” described by GTE (Ex. 1016, 1:60–2:4), we find that the cited disclosure in Philips amounts to insufficient evidence that a person of ordinary skill in the art would have understood GTE to describe an illumination unit that would be suitable for use as a backlight for an LCD device. As we explained in our Decision Denying Institution, GTE explicitly states that its lamp tubes are mounted side-by-side and parallel in a circular arrangement around a central axis, and we cannot discern how lamp tubes mounted in such an arrangement could be employed as an LCD backlight. Dec. 17–18. Philips’ discussion of GTE does not provide any guidance in that regard, and Petitioner’s contentions to the contrary in the Request for Rehearing are not persuasive. Req. Reh’g 9–11. We disagree, in particular, with Petitioner’s assertion that “as a matter of common sense, the circular arrangements disclosed in GTE would provide illumination around the entire circumference of the arrangement much like a single lamp tube would provide illumination around its entire circumference.” Id. at 10. Regardless whether Petitioner envisions GTE’s circular apparatus being mounted with its central axis parallel with, or perpendicular to, the plane of the LCD, Petitioner has not presented sufficient evidence to show how such an apparatus could, for example, provide the sort of “highly uniform light over the entire back surface of the liquid crystal panel” that Petitioner’s declarant Dr. Silzars states to be an objective of an LCD backlight unit. Ex. 1002 ¶ 24. In any event, it is not an abuse of discretion to have performed an analysis or reached a conclusion with which Petitioner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 4
NonePatents in suitUS 6,417,833 - PTAB · Mar 4, 2016 · IPR2015-01417 · APJ Bryan F Moore · IPR · Rehearing
The Board denied rehearing, finding the petition did not show a reasonable likelihood of prevailing on the anticipation challenge to claim 4 because its mapping was inadequately explained.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. ANALYSIS When considering a request for rehearing, we review the Decision Granting Institution for an abuse of discretion. 37 C.F.R. § 42.71(c). The party requesting rehearing bears the burden of showing that the Decision Granting Institution should be modified, and “[t]he request must specifically identify all matters the party believes [we] misapprehended or overlooked.” 37 C.F.R. § 42.71(d).” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“with respect to the anticipation ground,] Takizawa discloses semiconductor material being disposed at the drain bus line/gate bus line overlap, in addition to other regions in the thin film transistor matrix device. Petition (“Pet.”) at 19–26; Ex. 1012 at ¶¶ 55, 61.” Reh’g Req. 4. We disagree because such evidence was not explained adequately in the Petition. The Petition states, without further explanation, that “Takizawa also teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
- BurdenDecided for patent owner
“teaches formation of semiconductor layers at the crossover location. Ex. 1012, ¶ 61.” Pet. 21–22. Nevertheless, the Petition contains no further explanation supporting that statement. Id. The Petition merely cites the Chiang declaration and does not explain sufficiently the significance of the cited testimony. See 37 C.F.R. § 42.22(a)(2). “Arguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Without a sufficient explanation why Takizawa would anticipate the limitation to operative semiconductor formed where said gate bus line overlaps said drain bus line in the Petition itself, the citations to the Chiang Declaration amount to incorporation by reference of arguments made in that declaration that circumvent the page limits that apply to petitions. 37 C.F.R. § 42.24(a). Thus, we did not overlook or misapprehend Petitioner’s arguments or evidence in the Petition. Thus, we are not persuaded by this argument.” slip op. at 3
§ 102 anticipationPatents in suitUS 5,966,589
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.